WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Lost in Space, SA
Case No. D2002-0445
1. The Parties
The Complainant is Volvo Trademark Holding AB, a corporation organized and existing under the laws of Sweden, with a principal place of business at c/o AB Volvo, VHK, dept. 641, SE-405 08 Goteborg, Sweden. The Complainant is represented by Ms. Cynthia Clarke Weber and Ms. Leigh Ann Lindquist, Sughrue Mion, PLLC, 2100 Pennsylvania Avenue, N.W., Washington, DC 20037, United States of America.
The Respondent is Lost in Space, SA, 6th Floor, 3510 South Ramblas Blvd, Palma, Majorca, SA 1234, Spain.
2. The Domain Name and Registrar
The domain name at issue is <volvoclub.com> (the "Domain Name"). The Registrar is Intercosmos Media Group, Inc dba directNIC.com (the "Registrar"), New Orleans, United States of America.
3. Procedural History
The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on May 8, 2002. On May 13, 2002, the Center received a hard copy of the Complaint, with supporting evidence.
On May 13, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on the same day, that it had received a copy of the Complaint, that the Domain Name was registered with directNIC.com, and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full whois details related to the Domain Name.
On May 22, 2002, the Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Sole Panelist has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
On May 22, 2002, the Center notified the Respondent by courier and e-mail, in accordance with Paragraph 2(a) of the Rules, of the commencement of this proceeding and set June 11, 2002, as the date for the submission of a Response.
The Center did not receive a Response from the Respondent. On June 12, 2002, the Center issued a Notification of Respondent Default, which was sent by e-mail to the Parties.
On July 5, 2002, the Center invited Mr. Fabrizio La Spada to serve as Sole Panelist. On July 8, 2002, the Center received Mr. La Spada's Statement of Acceptance and Declaration of Impartiality and Independence. On July 10, 2002, the Center appointed Mr. La Spada as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was communicated by e-mail to the Parties. The Center set July 24, 2002, as the Projected Decision Date.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
On July 12, 2002, the Sole Panelist issued a Procedural Order No. 1, which was sent by the Center to the parties by e-mail on July 14, 2002. This Procedural Order directed the Complainant to produce documents evidencing ownership of the trademarks on which it relies in the proceeding. The Respondent was allowed to comment on the documents produced by the Complainant. August 1, 2002, was set as the new Projected Decision Date.
On July 18, 2002, the Complainant sent additional documents to the Center, by fax and courier, with a copy to the Respondent. These documents were received by the Center in hard copy on July 23, 2002. The Respondent did not file comments on the documents produced by the Complainant.
4. Factual Background
The Complainant is a corporation which handles the trademark affairs of AB Volvo and Volvo Car Corporation (the "Volvo Companies") throughout the world. It is owned equally by these two companies.
The Volvo Companies have been selling cars, trucks, buses and many other goods and services under the VOLVO name for several decades. The name VOLVO, alone and in combination with other terms and designs, is registered extensively as a trademark and service mark worldwide. It has been widely used by the Volvo Companies and their predecessors in interest since the 1920s.
In the United States of America, there are eighteen live trademarks consisting of or containing the name VOLVO. The first trademark has been registered on October 31, 1955, for "automobiles and trucktractors and parts thereof" in Class 19. the Complainant has produced evidence that several VOLVO trademarks, which were registered by the Volvo Companies, have been assigned to the Complainant in 1999.
The Respondent registered the Domain Name with the Registrar on November 19, 2001.
The Respondent set up a web site, accessible by the Domain Name, which offers escort services under the name "Temptations@Work". The Domain Name is linked to the same domain servers as the domain name <temptationsatwork.com>, which is held by the Respondent.
5. Parties’ Contentions
The Complainant asserts that the VOLVO mark has been extensively used throughout the world, beginning in the 1920s, in connection with cars, trucks, buses, construction equipment, components for airplane and rocket engines and many other goods and services. Moreover, the name VOLVO is registered extensively as a trademark and service mark, including in the USA, since the 1950s. The Complainant submits that the VOLVO mark has become famous by virtue of its long and extensive use, and is now one of the best known trademarks in the world, recognized as a symbol of the highest quality.
The Complainant contends that the Domain Name is confusingly similar to the VOLVO trade name and trademarks. According to the Complainant, CLUB is a descriptive, commonly used term with little or no source indicating significance.
The Complainant also submits that the Respondent has no legitimate interest in the Domain Name, based on the Complainant's continuous and long prior use of its mark and the trade name VOLVO.
The Complainant further contends that the Respondent has registered and is using the Domain Name in bad faith. According to the Complainant, there is no reason for the Respondent to use the name VOLVO in its domain name other than to attract the public to its web site for commercial gain, by creating a confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site and the services offered thereon. The Complainant stresses that the Domain Name links to a website which offers prostitution services or other form of selling female companionship.
The Complainant alleges that the address provided by the Respondent is not an actual address and that the Respondent itself is not a recognized entity.
The Complainant also points out that the Domain Name was previously registered in the name of another entity, which is the registrant of over 400 domain names, some of which are linked to the domain name <temptationsatwork.com>.
Finally, the Complainant submits that the Respondent was on constructive notice of the Complainant's famous VOLVO mark and chose to register the Domain Name with full knowledge of the Complainant's right.
On these basis, the Complainant seeks the transfer of the Domain Name.
The Respondent has not submitted a Response nor any other comments.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied :
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
The Sole Panelist notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights ?
This question raises two issues : (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
As to the first question, the Complainant has produced clear evidence that it has rights in several VOLVO trademarks, which are registered in the United States (e.g., word mark "VOLVO" Reg. No. 636 129 registered by AB Volvo on October 23, 1956, and assigned to the Complainant on February 26, 1999).
As to the second question, the Sole Panelist finds that the Domain Name is confusingly similar to the trademark VOLVO. As numerous prior panels have held, when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ( November 6, 2001) ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001) ; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000)). That is especially the case where the word that is added to the Complainant's trademark is not distinctive, as is the case in the present matter (addition of "club") (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246 (April 30, 2001) ; Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717 (March 19, 2001)).
The Sole Panelist therefore finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name ?
The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant's continuous and long prior use of the VOLVO mark and trade name. The Respondent, which did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements :
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
On the basis of the statements and documents submitted, the Sole Panelist is satisfied that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name merely refers to another web site, <temptationsatwork.com>, on which escort services are offered under the name Temptations@Work. No goods or services are offered under the name "volvo" "volvoclub" or "volvo club". Moreover, there are no elements showing that the Respondent is or was commonly known by the Domain Name. Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the web site to which the Domain Name refers appears to offer services for commercial gain.
In accordance with the elements set out above, the Sole Panelist finds that the Respondent has no rights nor legitimate interests in respect of the Domain Name.
6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith ?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which :
"by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Sole Panelist is satisfied that these circumstances are fulfilled in this case. First, as submitted by the Complainant and as several prior panels have held, the VOLVO trademark is a famous mark and has a worldwide reputation in connection with automobiles and other vehicles (see Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338 (June 12, 2000) ; Volvo Trademark Holding AB v. Eurovendic (erik schroder), Case No. DNU2001-0001 (WIPO, April 29, 2001) ; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002) ; Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002)). It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its affiliated companies and of their rights in the VOLVO trademarks at the time it registered the Domain Name.
Moreover, there is no justification in the statements and documents submitted for the use of the Complainant's trademark in the Domain Name, other that the attempt to attract, for commercial gain, Internet users to the Respondent's web site, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. The Sole Panelist notes that the Respondent does not use the words "volvo" or "volvo club" to offer goods and/or services through the Domain Name. On the contrary, the Domain Name merely redirects users to another web site, where no mention is made of the Domain Name or of names corresponding to the Domain Name. The Sole Panelist finds that this is further evidence that the Respondent registered and uses the Domain Name in bad faith, to benefit from the Complainant's trademarks reputation and to attract Internet users to its web site for commercial gain (see, e.g., Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193 (April 20, 2001)).
Therefore, the Sole Panelist finds that the Domain Name was registered and is being used in bad faith.
On the basis of the elements set out above, the Sole Panelist finds that :
1. The domain name <volvoclub.com> is confusingly similar to the trademarks "VOLVO", in which the Complainant has rights;
2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;
3. The Domain Name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name (<volvoclub.com>) be transferred to the Complainant.
Fabrizio La Spada
Dated: August 1, 2002